There are many similarities between Canadian and American trade-mark practice, such as the overall steps in the application process. However, sometimes Canadian lawyers and clients make erroneous assumptions about US trade-mark laws that can have a significant impact on a trade-mark portfolio. Likewise, some US lawyers and clients incorrectly assume more similarity between US and Canadian laws than actually exists. This article gives an overview of some of the similarities and differences between Canadian and US trade-mark practice so brand owners can structure their affairs accordingly when managing a cross-border trade-mark portfolio.

SOME SIMILARITIES

1. “First to File”

In both Canada and the US, an application with an earlier filing date has priority over later filed applications filed for confusingly similar marks. In both countries, however, prior use rights are relevant in opposition proceedings and litigation.

2. Paris Convention

Both Canada and the US are members of the Paris Convention for the Protection of Industrial Property. Under the Convention, if a Canadian applicant files its trade-mark application in the US within six (6) months of the Canadian application’s filing date, the filing date of the US application is deemed to be the same as the Canadian’s application’s filing date. The same rule applies to US applicants filing in Canada. The Convention allows applicants to spread their legal costs out over a longer period of time.

3. “Use It or Lose It”

In both Canada and the US, trade-mark registrations are maintained by using the registered mark, without altering the mark, in association with the wares and/or services claimed in the registration. Failure to use the mark in such a manner can give rise to administrative proceedings to cancel the trade-mark registration in whole or in part, depending on whether the mark has been used with all of the wares and/or services registered.

SOME DIFFERENCES

1. Terminology

Canadians use the spelling “trade-mark” and the term “wares”, while American use “trademark” and “goods”.

2. Madrid Protocol

The Madrid Protocol is a system for obtaining international trademark registrations. The US is a member of the Protocol. The Protocol allows US residents who own US trade-mark applications/registrations to use those applications/registrations as a basis to register their trade-marks in one or more of the countries who are Protocol members. As Canada is not a member of the Protocol, Protocol filings are not available to Canadian residents.

3. National vs. State Registrations

In Canada, only federal (as opposed to provincial) trade-mark registrations are available. A Canadian trade-mark registration can be obtained, giving the applicant the exclusive national right to use the mark across Canada, even if the applicant has used the mark in only one Canadian province/territory. In the US, a federal trade-mark registration can be obtained only if the mark has/will be used in interstate commerce in the US. Otherwise, only state registrations (in states where the mark has/will be used) are available.

4. Classification

In the US, wares and services are grouped into different classes (e.g. food in one class, restaurant services in another), and the US Patent and Trademark Office charges an application filing fee per class. In Canada, there is no classification system. The Canadian application fee does not vary no matter how many wares and/or services are claimed in the application.

5. Application Basis

US trade-mark applications can be filed claiming wares and/or services on one or more of: (a) intent to use the mark (ITU); (b) prior use of the mark in the US; or (c) an existing foreign registration. If there is uncertainty about the prior use of the mark, a US application can be filed on an ITU basis and amended later to claim the prior use date.

While Canadian applications can be filed on the same bases as in the US, there are some important differences. Firstly, an ITU (“proposed use” in Canadian) claim cannot be amended to claim a use date once a Canadian trade-mark application is filed. Secondly, if an existing foreign registration is being claimed, the mark must be used outside of Canada when the Canadian application is filed. An inaccurate proposed use claim, claiming use of the mark in Canada before use occurred, and/or failure to use the mark outside of Canada before filing when claiming a foreign registration, are material defects which can lead to the successful challenge of an application or resulting registration by another business.

6. Official Marks

Canada is the only country in the world to have “official marks” – marks used by universities, governments, public bodies and Royalty. Examples of such marks include the Royal Arms, the Red Cross, the flags of most countries, and the Olympic rings. While the US does not have official marks, in both Canada and the US, there is special legislation protecting the Olympic marks.

7. Service Marks

Canadian law uses the term “trade-mark” for all marks (except official marks) whether they are affiliated with wares and/or services. US law sometimes distinguishes between “service marks” (marks for services) vs. “trade-marks” (marks for product).

8. Supplemental Register

In Canada, surnames and descriptive marks cannot be registered. In the US, such marks may be registered on a separate register called the Supplemental Register, provided the mark has been used in interstate commerce in the US unless the application is based on a foreign application or registration.

9. Divided Applications

US trade-mark applications containing both ITU and prior use claims can be “divided” into an application to register the prior use claims while the ITU claims continue in a separate application. In Canada, if the applicant wishes to register the prior use claims before the mark has been used with the proposed use wares and/or services, the applicant must register the prior use claims and file a new application for the proposed use claims.

10. Opposition Period

In Canada, a trade-mark application can be opposed within two (2) months of publication. In the US, the opposition period is 30 days post-publication.

11. Evidence of Use

In Canada, evidence that a trade-mark has been used is not required to register a trade-mark application or renew a trade-mark registration. In the US, specimens of use must be filed when registering and renewing a trade-mark application. Further, a US trade-mark owner must file an affidavit of use between the fifth and sixth anniversary of the date of registration.

12. Registration Term

Canadian trade-mark registrations are valid for 15 years from registration/renewal, while US trade-mark registrations run for 10 years from registration/renewal.

13. Use of the ® Symbol

In both Canada and the US, there is no requirement to use the registered trade-mark symbol (®). In the US, use of the ® symbol is required to recover damages for registered trade-mark infringement unless the defendant was duly notified of the infringement, and continued after the notice. However, use of the ® symbol in the US with an unregistered mark could be considered fraud on the public or inequitable conduct which justifies denying relief in a trade-mark infringement action. While the author has yet to see a Canadian court address the use of the ® symbol with a unregistered trade-mark, the author discourages such use in the event it is found by a Canadian court to be fraudulent or inequitable conduct.

14. Licensing to Corporate Relatives

In Canada, any use of a trade-mark, including a party related to the trade-mark owner such as a corporate parent or subsidiary, must be formally licensed with the trade-mark owner having direct or indirect control over the quality or character of the licensed wares and/or services. Ideally, the license should be written. In the US, use of a trade-mark by a corporate parent or subsidiary does not require a formal license, as control by the trade-mark owner is assumed. However, there may be other reasons why a written intra-company license may be advisable.

CONCLUSION

While there are some similarities between Canadian and US trade-mark law, there are differences between the two countries’ laws which can be significant. Canadian brand owners who wish to protect their trade-marks in the US should not assume that the trade-mark laws south of the border are identical to Canada’s. Similarly, US brand owners should not make similar assumptions about the application of American laws to their Canadian marks. Knowing the similarities and differences between Canadian and American trade-mark laws can assist brand owners in effective trade-mark portfolio management on both sides of the border.

Disclaimer: This article is informational in nature and is not legal advice on the laws of any country.